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2 15-12-reisman mitef patents

  1. 1. A New Age in Patent Liquidity New Opportunities for Entrepreneurs An Inventor/Entrepreneur Perspective Richard Reisman Teleshuttle Corporation rreisman [at] teleshuttle [dot] com February 15, 2012 1 Copyright 2012, Teleshuttle Corp. All rights reserved. / Patent pending
  2. 2. A Report from the Trenches (Sell-side – Inventor/Entrepreneur) One fortunate odyssey through the Kafkaesque wonderland of patents… • From entrepreneurship to “Plan B” • Getting + developing patents • Partnering for commercialization • Sales / Licensing / Litigation • Lessons? 2
  3. 3. Reisman/Teleshuttle Background • Diverse Media/IT business roles – over 4 decades – Manager, consultant, strategist, programmer • 20 Patents + dozens pending 7 Portfolios – starting 1994 – One litigated 2004-6, sold 2006, controlled by IV – One sold 2009 to RPX • Teleshuttle Corp. – Started: software/services ‘94-96 (a “PE”) – Now: innovation “studio” seeking strategic partners and/or IP sales (an “NPE”?) 3
  4. 4. Teleshuttle Corp, Patents, and “Plan B”* • Valuable new approach to online services – Smart clients, “push” technology – Create a new kind of platform business • Applied for patent before launching company (1994) – Patent as protection …+ “Plan B” hedge – “Practicing Entity” 1994-96, limited success – Shift to Plan B (“NPE”) • Plan B came through (2006 – 12 years) [*See blog: “The Six Phases of a Technology Flop” ...Patents, and Plan B] 4
  5. 5. Commercialization Deal – BTG My “White Knight” • Need help to license or sell: who/how/deals/$$$ • Evaluated numerous players (1998) • BTG – Expertise – Funding (direct / contingency …vs fund-raising) – Terms • Exclusive license to commercialize • For revenue share (no advance, no costs, +consulting fees) • (Milestones or reversion – BTG bought extensions, larger share) • Good results – Significant added value in continuations ($$$ investment) – Little control, but good involvement – Ups and downs, but key people came through 5
  6. 6. …Into Patent Litigation “The Sport of Kings” • “Friendly” licensing talks starting 2003 – Microsoft, Apple, 2 others – Small offers, or just “go away”/“sue me” • Suits in 2004: Microsoft, Apple – Discovery – Markman stage hearings (=“claim construction”) – Depositions: personal assault • End 2005 looking strong, but still far apart… – Ecstasy …maybe? – Huge win down the road? – Agony …for sure! – More years of trial + appeal • Grueling work, high stress, …sudden death? • Very hard on little guy (even with funding) 6
  7. 7. Intellectual Ventures to the Rescue! My “Fairy Godmother” • Magical resolution: creative, win-win deal (3/06) – Structured / brokered by IV • LLC buys patents – upside: future revenues from others • IV controls LLC • Investors in LLC fund purchase (for share in upside) – We* get $35MM + share of future profits (drop suit) (*Lawyers, BTG, Teleshuttle) • Win for IP owner – Much less than outright win at trial (10x?) – Reasonable compensation – Happy, quick end to long ordeal 7
  8. 8. Sale #2 – Search Portfolio A more “rational” path • 4 Patents filed 2000, issued 2005-2008 – Begun with BTG (pre-filing) – Returned by BTG before allowance by PTO • Evidence of use 2009 • Partners to bring to market • Sale to RPX 2009 – Very fast (5 months from evidence of use, to closing) – Friendly, “rational” – Not the premium price of litigation, but low risk, no trauma 8
  9. 9. Lessons? Plan for change, count on nothing 1. Expect changes and reversals: – People / Priorities / Confidence – Markets / Outlook – Hedge your bets 2. Disclose richly + Keep prosecution open!!!* *File continuation before patent issues or the door closes forever! 3. Partner + Choose partners with great care Richard Reisman, Teleshuttle Corporation rreisman [at] teleshuttle [dot] com 9
  10. 10. A New Age in Patent Liquidity New Opportunities for Entrepreneurs An Inventor/Entrepreneur Perspective Richard Reisman Teleshuttle Corporation rreisman [at] teleshuttle [dot] com February 15, 2012 10 Copyright 2012, Teleshuttle Corp. All rights reserved. / Patent pending

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